2668 Petition for Entry of Late Papers for Revival of Reexamination Proceeding [R-07.2015]

The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.

35 U.S.C. 41 Patent fees; patent and trademark search systems.

(a) GENERAL FEES. —The Director shall charge the following fees:

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(7) On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.

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35 U.S.C. 133 Time for prosecuting application.

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.

(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:

(3) Any terminal disclaimer (and fee as set forth in § 1.20(d) ) required pursuant to paragraph (d) of this section; and

(4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

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(e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:

(2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or

(3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.

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If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and no claims are allowable, then pursuant to 37 CFR 1.957(b), the prosecution of the reexamination proceeding is terminated, and a certificate under 37 CFR 1.997 is issued canceling all claims of the patent that were under reexamination.

An inter partes reexamination prosecution terminated under 37 CFR 1.957(b) can be revived if the delay in response by the patent owner was unintentional in accordance with 37 CFR 1.137.

If the patent owner in an inter partes reexamination proceeding fails to file a timely and appropriate response to any Office action and at least one claim is allowable, then pursuant to 37 CFR 1.957(c), the proceeding continues but is limited to the claim(s) found allowable at the time of the failure to respond (i.e., in the Office action).

Rejected claims terminated under 37 CFR 1.957(c) can be revived if the delay in response by the patent owner was unintentional in accordance with 37 CFR 1.137.

All petitions in reexamination proceedings to accept late papers and revive will be decided in the Office of Patent Legal Administration (OPLA).

I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE

37 CFR 1.137 was revised to implement the changes in the Patent Law Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of abandoned applications and reexamination prosecution terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c) under the ‘‘unavoidable’’ standard and to provide for the revival of abandoned applications and the acceptance of delayed responses in reexamination by patent owners on the basis of unintentional delay. Specifically, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to eliminate the provisions pertaining to petitions on the basis of unavoidable delay.

II. PETITION BASED ON UNINTENTIONAL DELAY

As discussed in subsection I. above, section 201(b) of the PLTIA added new 35 U.S.C. 27, which provides that the Director may establish procedures to accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the patent owner. The patent laws formerly provided for revival of an unintentionally abandoned application only in the patent fee provisions of 35 U.S.C. 41(a)(7). See Public Law 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of 35 U.S.C. 41(a)(7) were imported into, and were applicable to, all ex parte reexamination proceedings by section 4605 of the American Inventors Protection Act of 1999. The unintentional delay provisions of 35 U.S.C. 41(a)(7) became effective in reexamination proceedings on November 29, 2000. However, this statutory structure raised questions concerning the Office’s authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657 (Fed. Cir. 2008).

37 CFR 1.137(a), as amended in the final rule to implement the PLTIA, provides that if the delay in reply by patent owner was unintentional, a petition may be filed pursuant to 37 CFR 1.137 to revive a reexamination prosecution terminated under 37 CFR 1.957(b) or limited under 37 CFR 1.957(c). 37 CFR 1.137(b) states the petition requirements. Specifically, 37 CFR 1.137(b) provides that a grantable petition pursuant to 37 CFR 1.137 must be accompanied by: (1) The reply required to the outstanding Office action or notice; unless previously filed; (2) the petition fee as set forth in 37 CFR 1.17(m); and (3) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. 37 CFR 1.137 continues to provide that the Director may require additional information where there is a question whether the delay was unintentional.

III. RENEWED PETITION

Reconsideration may be requested of a decision dismissing or denying a petition under 37 CFR 1.137 to revive a terminated reexamination prosecution. The request for reconsideration must be submitted within one (1) month from the mail date of the decision for which reconsideration is requested. An extension of time may be requested only under 37 CFR 1.956; extensions of time under 37 CFR 1.136 are not available in reexamination proceedings. Any reconsideration request which is submitted should include a cover letter entitled "Renewed Petition under 37 CFR 1.137 ".